Deal of the week – BT/IPVALUE

Pinsent Curtis advises BT on patent protection plan

Pinsent Curtis Biddle has won and completed its first headline instruction for BT. The firm has advised the telecoms giant on a deal that will allow it to aggressively search for companies that are using technologies it has patented.
BT unveiled a six-year contract with start-up company IpValue to monitor the use of technologies it has invented and patented and to mop up overdue royalties from companies that are using its patents.
The deal comes 18 months after BT discovered that it had the patent for hyperlink, the technology that allows web users to move between pages on the internet. BT is involved in litigation in the US over the hyperlink patent and is trying to win royalties from US internet service providers.
IpValue will manage BT's patents exclusively in the US and Canada and carry out some related work in Japan. BT will continue to monitor its own patents in Europe. BT and IpValue will share the US revenues, which they hope will reach $100m (£70m) a year by the end of the six-year contract.
Stephen Chandler, head of technology and media law at Pinsents, advised BT on the deal. Slaughter and May's head of technology, media and telecoms Nigel Swycher advised IpValue, which is also a new client for Slaughters.
It is commonplace for technology companies such as IBM to aggressively monitor their patents, but BT is understood to be the first European technology company to take this route.
Swycher said: “Before, European technology companies used to react defensively to patent disputes. They would patent everything and if a competitor came across accusing them of infringing their intellectual property (IP) rights on one product, the company would simply point out that one of its patents had been infringed by the accusing company. But BT is the first European technology company to aggressively monitor all its patents worldwide.”
Swycher anticipates that Slaughters will keep IpValue as a client. Pinsents is also expected to win more IP work from BT.
BT group head of legal Anne Fletcher does not operate a formal legal panel, but has strong relationships with main advisers Linklaters and Ashurst Morris Crisp. Pinsents' current relationship is with BT's technology research division BTexact, which develops new technology patents for the company. BTexact's legal work is outsourced seperately by BT in-house lawyer Geoffrey Beedham.
Chandler said: “We're hoping there are more projects in the pipeline for us and we also hope to be in the frame for IP litigation work for BT. BT's IP department is part of BT plc rather than part of BTexact, although 90 per cent of the work is for BTexact.”